Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Indicators of Innovative Step

Date Published

Also in this Chapter:

Key Legislation:

Patents Act:

  • s7 Novelty, inventive step and innovative step  
  • s18 Patentable inventions  

Related Chapters:

  • 2.9 Patentable Subject Matter
  • Balance of Probabilities
  • Innovative Step
  • Examples

As to the level of contribution necessary to be ‘substantial’ and thus meet the innovative step test, no definitive measure applies and examiners need to assess each case on its own merits given the nature of the invention.

Questions which may assist in considering the requirement for a ‘substantial’ contribution include:

  • Does the difference identified between the invention and the prior art convey an advantage to the invention?
  • Does the difference provide a technical or functional contribution to the invention? In assessing this indicator, the concept of 'technical nature or feature' in terms of that used in relation to manner of manufacture may be helpful (see 2.9 Patentable Subject Matter). Technical in this sense is in relation to vendible or economic value having a practical application, i.e. there is some usefulness or physical effect resulting from the working of the invention. Mere aesthetic effects are not considered to fall within the realms of technical.
  • Is the difference a significant aspect of the operation of the invention?

Answering ‘yes’ to these questions suggests that the invention is likely to be innovative, while answering ‘no’ suggests that the invention may lack an innovative step.  However, it must be borne in mind that these questions are merely indicators and each case needs to be considered on its own merits.  Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179 makes it clear that the appropriate test to apply remains whether there is a substantial contribution to the working of the invention as per Innovative Step.  In this regard, examiners should reflect the appropriate test in their objections.  

 Examiners should note that objections of innovative step are raised, and maintained, on the balance of probabilities (see Balance of Probabilities).

Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 (and Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225) also provide some guidance on assessing innovative step. Examples discusses the features in the Dura-Post decision that were found to confer an innovative step and the advantages or contributions that they made to the invention.

Amended Reasons

Amended Reason Date Amended
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